A trip to the West Coast for a mediation kept me from posting this earlier, but Judge Schroeder’s unredacted opinion in the VirnetX case resolving the postverdict motions is now out, and provides the latest analysis on many issues of interest to practitioners, including most notably enhanced damages, as none were awarded.
Apologies to Yeats, but it is referred to as the “most thoroughly pillaged piece of literature in English literature”, so piling on is permitted. Judge Schroeder entered another final judgment in the VirnetX case last week after denying defendant Apple’s most recent JMOL and motion for new trial. The order itself is filed under seal for the moment, but will be unsealed, less any needed redactions from the parties, on September 10. VirnetX – final judgment VirnetX – sealing order
Multidistrict litigation (MDL) proceedings have never really taken off in patent litigation, but this case represents another attempt to try, albeit with a twist – this time it’s the defendants who are seeking to MDL related proceedings to the Eastern District of Texas.
An improper inventorship defense rests on the statutory requirement that a patent is invalid if more or fewer than the true inventors are named.
A defense of “derivation”, on the other hand, requires proof of both prior conception of the invention by another and communication of that conception to the patentee.
Both defenses require proof by clear and convincing evidence.
This case presents an interesting situation in which the defendant claimed that the plaintiff wasn’t the inventor, but did not identify who else was. Given that the procedural context was the plaintiff’s motion for summary judgment as to the defendant’s improper inventorship defense, the issue presented was thus whether Defendant had created a genuine issue of material fact regarding its defenses of improper inventorship and derivation.
On the derivation defense, the issue was whether the Defendant had adduced proof that the “entirety” of the invention was conceived by others.
In recent weeks I have been looking at various venue opinions over the past few months, and realized that I’ve been giving Section 1404 motions asserting inconvenience short shrift since improper venue post Heartland/Cray is sort of the new black in venue law. This opinion remedies that somewhat with an opinion from a few weeks back that has some really useful insights into the relevant analysis.
Motions to strike expert testimony usually attack multiple opinions by the expert, and orders not infrequently deny some, but not all of the grounds. This order provides an example of that … and oh so much more.
Motions to transfer alleging inconvenience aren’t as common as they were before TC Heartland, but you still see them from time to time. In this case, Judge Mitchell concluded that the relevant factors made the proposed transferee forum in California “clearly more convenient.
The issue of when cases should be stayed due to pending IPR proceedings, and what effect those proceedings will have on the district court litigation if they are resumed are issues of interest to many patent litigators. This opinion issued earlier today addresses both.
A Tyler jury in Judge Schroeder’s court returned a verdict yesterday in the latest VirnetX trial against Apple. It found that Apple’s FaceTime and VPN On Demand infringed four VirnetX patents and set damages at $502.6 million. It comes back today to begin the willful infringement portion of the trial. The first VirnetX trial in 2012 resulted in infringement and an award of $368 million for older Apple products. The Federal Circuit affirmed the infringement finding but required a new trial on damages. Judge Schroeder combined the damages retrial on the older products with the soup to nuts trial on newer products in February 2016, which resulted in a $625 million verdict. Apple convinced him to set that combined verdict aside, thus requiring the two cases to be retried separately. On the older products damages retrial the jury found $302 million, which the Court later enhanced to $439 million, and that verdict is on appeal – and now the second verdict on the newer products is $502.6 million. So the separate trials yielded verdicts of $804.6 million before enhancement, compared to the consolidated trial in 2016 of $625 million. How much of that is attributable to post-February 2016 sales I do not know.
The issue of when initial disclosures – not patent rule disclosures, but the Rule 26(a)(1)-ish ones which include lists of persons with knowledge – can be supplemented is one that doesn’t come up often. And a request that issues be sequenced at trial is even rarer. This order resolving requests for both is of interest to practitioners, since while these requests don’t come up often, they’re of great interest when they do.